Salt Lake Comic Con’s Legal Battle with San Diego Comic-Con International Takes a Surprising Turn

Salt Lake Comic Con founders Dan Farr and Bryan Brandenburg were scheduled for depositions and a settlement conference with the United States District Court Judge Jan Adler in San Diego on June 15, 2017. It was hoped the conference would bring a reasonable settlement in the ongoing legal battle with San Diego Comic-Con International (SDCC) and Salt Lake Comic Con’s (SLCC) right to call itself a “comic con.” Those depositions did take place but the meeting with the judge was canceled. The case took another step backwards as legal briefs were filed indicating that the two sides are still at an impasse and a settlement has not been reached.

Nearly three years ago, during their convention in San Diego, SDCC served SLCC with a cease and desist letter trying to prevent them from using the term “comic con.” When Salt Lake refused the demands, lawyers from San Diego filed a lawsuit that seeks to prevent SLCC from using the term “comic con” specifically for any event, logo, trademark or website moving forward and further claimed ownership of all variations of the generic term “comic con,” in spite of ubiquitous and unpoliced use by hundreds of comic cons around the country and the world over the last 50 years.

“First and foremost, we respect San Diego Comic-Con International and their contribution to the industry,” said Dan Farr, Salt Lake Comic Con Founder and Show Producer. “We remain hopeful that a settlement may still be reached, or that a preliminary judgment will be made in the favor of comic con fans and comic con promoters around the world. Otherwise, we feel confident we will win at trial. When the lawsuit was filed, we said we were committed and prepared to do whatever it takes to protect our right and the right of many other promoters to host a comic con event. We feel that we’re successfully achieving those objectives for us and our many colleagues in the comic con industry.”

There are a number of facts surrounding the case, including:

• San Diego did not originate the name “comic con.” By the 1960s, American (and British) comic book collectors were gathering for events that they called comiccons, comicons, comic-cons, comic cons and comic conventions. In 1966, three comic cons were held in New York City alone, where comics originated. It wasn’t until 1970 that the San Diego’s Golden State Comic-Minicon was organized and it wasn’t until later that it was renamed Comic-Con International. The term “comic con” was generic before San Diego’s first event.
• In the 1990s San Diego Comic-Con International decided it should own the generic cultural term comic con and began to process a series of applications to register various comic con trademarks, including “comic-con.” However, when the Trademark Office rejected its applications as descriptive of a comic convention, San Diego filed a declaration claiming that its use of Comic-Con was “exclusive” to overcome the rejection. Salt Lake Comic Con has shown in recently filed court documents that San Diego’s declaration was false and fraudulent because San Diego knew there were many comic cons by this time; many of them were listed in Chicago Comiccon’s opposition to a previous trademark application. Here are the false declarations: https://goo.gl/4Fy1gB. By this time the term “comic con” had been used all over the country and the world in many metropolitan cities like Chicago, New York, Houston, London and many more.
• In 1995 San Diego Comic-Con International tried to register a trademark for “Comic Con.” Chicago Comiccon opposed the trademark and San Diego abandoned it: https://goo.gl/BkQNoM Here is the DEAD trademark: https://goo.gl/GLoiwh. Here is the Abandoned PTO document: https://goo.gl/QQgH1B.
• In 2005, San Diego Comic-Con International attempted to register a trademark for “Comic-Con.” The trademark office rejected the trademark because the name was merely “descriptive.” San Diego filed a fraudulent response declaration to the Trademark Examiner’s rejection, stating that “Comic-Con” was exclusively used by, and that the mark has become exclusively associated with, San Diego. This was 10 years after they had been provided a list of dozens of comic cons during Chicago Comicon’s Opposition process in the late ’90s and after even more comic cons had been established, using variations of the name including “comic-con” with no restrictions. Here are the false declarations: https://goo.gl/vxQsDV .

A more complete list of facts establishing that San Diego does not have a valid trademark in comic con is provided in three motions Salt Lake Comic Con filed on June 23: Comic con is generic (Doc. # 104) (https://goo.gl/9YKh82), if San Diego ever had a comic con trademark it has been abandoned (Doc. # 105) (https://goo.gl/8iKuPH), and Salt Lake Comic Con seeks to add a claim to cancel the Comic-Con registration because it was obtained by fraud on the Trademark Office (https://goo.gl/j431A7). On June 27, 2017, Salt Lake Comic Con petitioned the Trademark Trial and Appeals Board (TTAB) to cancel San Diego’s Comic-Con registration, again based on fraud before the Trademark Office. Click here: https://goo.gl/97SFS8 to view a complete list of case highlights.

“After almost $1 million in legal fees we hope we are near the end of this frivolous lawsuit. The comic con term is generic and the trademarks in this case were obtained by fraud on the Patent and Trademark Office. San Diego does not have a valid Comic-Con registration and we will win and seek to recover our legal fees,” said Bryan Brandenburg, Co-Founder and Chief Marketing Officer at Salt Lake Comic Con. “This case is unwarranted and based on fraudulent documents filed with a federal agency. We have filed our own counterclaims against San Diego Comic-Con and have not been willing to settle for the unreasonable terms we have been offered. We are demanding that SDCC’s trademark registrations be cancelled based on being generic, abandoned and obtained by fraud. We look forward to using these financial resources spent on legal fees to continue to build ‘the greatest comic con in the world’ (https://youtu.be/GPj56NDIpo8).”

Since San Diego Comic-Con International filed its cease and desist almost three years ago, Salt Lake Comic Con has achieved a number of milestones to protect its event and ensure that fans will always be able to experience the excitement of meeting their favorite celebrities and pop culture icons. Specific milestones include:

• Secured more than 200,000 media articles reporting on the case. The majority of these articles were overwhelmingly favorable to Salt Lake Comic Con’s case. To review these articles, click here: https://goo.gl/EgeVDR.
• On July 14, 2015, secured trademark rights from the United States Patent and Trademark Office for Salt Lake Comic Con.
• Provided evidence that San Diego Comic-Con International obtained trademarks through fraud.
• Filed for a two-part Motion for Summary Judgment (https://goo.gl/KzFeQd) in this case on June 23, 2017, with evidence that “comic con” is generic and abandoned.
• Filed a motion (https://goo.gl/9qijYL) to amend Dan Farr Productions’ counterclaim against San Diego based on the fraud against the Trademark Office when securing the trademarks in question, including “Comic-Con.”
• Filing a Cancellation Proceeding with the Trademark Trial and Appeal Board for cancellation of San Diego’s Comic-Con registration based on fraud before the Trademark Office.
• Entered a partnership with Pop Life (https://goo.gl/SdvqRR) to produce FanXperience (FanX™) events in Asia and have successfully held FanXperience events in the Philippines, Thailand and China. Salt Lake Comic Con co-hosted the first FanX event in the Philippines in June 2016.
• Successfully hosted four record breaking comic con events and four FanX events and continued to solidify its position as one of the premier comic cons in the country.
• Regularly draws top celebrities and pop culture icons, including Mark Hamill, Chris Evans, Jeremy Renner, Carrie Fisher, Kate Beckinsale, William Shatner, Patrick Stewart, Jason Momoa, Zachary Levi, Buzz Aldrin and Stan Lee.